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New Zealand joins the Global Patent Prosecution Highway (GPPH)

Date: 19 July 2017
Author: David Herman
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On 6 July 2017, the Intellectual Property Office of New Zealand (IPONZ) became the latest member to join the Global Patent Prosecution Highway (GPPH).

The GPPH is a pilot program between over 20 patent offices worldwide who have adopted common procedures to accelerate examination of qualifying applications. Under the GPPH, applicants are entitled to request expedited examination on the basis that one or more claims of a corresponding application have been found to be allowable by another Patent Office that is also participating in the pilot program. These offices are known as Offices of Earlier Examination (OEE).

Accordingly, IPONZ will now be accepting requests for expedited examination under the GPPH on the basis that one or more claims of a corresponding application have been found to be allowable by an OEE.

How to request accelerated examination under the GPPH at IPONZ

There is no additional fee for requesting expedited examination under the GPPH. However, the patent application must meet certain requirements before the request can be made, which are outlined as follows:

  1. The New Zealand application and the application of the OEE must have the same earliest filing or priority date.
  1. At least one claim in the OEE application must have been found to be patentable, i.e. novel, inventive and useful. The office action or examination report issued by the OEE must include an express statement of patentability for these claim(s).
     
  2. The claims of the OEE application must “sufficiently correspond” to the claims being examined by IPONZ.
  1. When filing a request under the GPPH, the following documents must be included:
  • A copy of the office action or examination report issued by the OEE which expressly identifies the patentable claims.
  • A copy of the claim set which includes the patentable claim(s) of the OEE application.
  • A table which sets out the patentable claim(s) of the OEE application and identifies the corresponding claim(s) to be examined by IPONZ.

If any of the documents filed with the request are not in English, the Applicant must provide IPONZ with a verified English translation of the documents, within a relevant time period.

A request for expedited examination under the GPPH can be made either at the time of filing an application, or later via amendment. It is important to note that a GPPH request will automatically trigger examination of the patent case.

Claims to ‘sufficiently correspond’

The claims to be examined by IPONZ must be identical or similar (including narrower) scope to the claims of the OEE application. Importantly, the claims to be examined under the GPPH cannot be broader in scope than those of the OEE application. Similarly, different claim-types to those of the OEE application are not considered to “sufficiently correspond” and cannot be pursued in New Zealand under the GPPH. For example, if the OEE application contains only claims to a composition, then claims filed at IPONZ which also include a method of making the composition, will not be considered to sufficiently correspond.

Optional materials filed with the request

The Applicant may also choose to file with the request for expedited examination under the GPPH additional non-mandatory materials, such as prior art documents cited against by the OEE, a cover letter, non-patent literature cited by the OEE, or other materials which relate to the GPPH request.

GPPH or Standard Examination

Choosing expedited examination under the GPPH or standard examination requires some consideration. As claims included with a request under the GPPH need to “substantially correspond” to the scope of the OEE application, different claim types to those in the OEE application may need to be pursued in one or more divisional application(s), thereby increasing costs to Applicants. In contrast, such different claim-types could have been readily included in the New Zealand application if standard examination was elected, at no additional cost.

Additionally, the pace of regular examination at IPONZ is relatively fast, where the issuance of a first examination report usually occurs around four weeks after requesting examination, the value of the GPPH in New Zealand is questionable, especially given the additional procedural steps required and potential limitation on claim scope.

Final comments

Previously, IPONZ have appeared hesitant to accept the merit of submissions during prosecution that claims have been amended to conform with the allowed scope of a corresponding overseas registration, even for corresponding accepted/granted US or European claims. By joining the GPPH pilot program, it will be interesting to see if the GPPH process is more persuasive towards IPONZ accepting granted US and European counterpart claims.

Perhaps the real value of IPONZ becoming a member of the GPPH is that owing to their fast standard examination process, an opportunity now exists to use any accepted NZ claims to request expedited examination under the GPPH in another participating jurisdiction. Given the stricter patentability standard we are currently seeing at IPONZ, the scope of any allowed NZ claims may be persuasive in overseas jurisdictions.

Tags:  New Zealand, Global Patent Prosecution Highway, GPPH, FB Rice, David Herman
 
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